WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Domains by Proxy, LLC / Alfred Kolinz, bmwupdate
Case No. D2017-2450
1. The Parties
The Complainant is Bayerische Motoren Werke AG (“BMW”) of Munich, Germany, represented by Kelly IP, LLP, United States of America (“USA”).
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, USA / Alfred Kolinz, bmwupdate of Lviv, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <bmwupdate.online> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2017. On December 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 14, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 15, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 19, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2018.
The Center appointed Ian Lowe as the sole panelist in this matter on January 16, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the world famous German manufacturer of BMW motor vehicles, established over 100 years ago. Since 1917 it has sold many millions of vehicles under and by reference to the BMW trademark. It has around 3,400 authorized BMW dealers around the world. The Complainant also has a network of websites advertising, promoting and offering for sale its automobiles, motorcycles and related products and services.
In addition to its corporate websites, the Complainant permits its authorized dealers and authorized importers to use trade names and domain names comprised in part of the BMW mark for their authorized BMW businesses and numerous such dealers use and have used such names over a long period.
For many years, the Complainant has offered navigation software and systems for its BMW vehicles under the BMW mark and offers updates for the software through its authorized dealers and through its “www.shopbmwusa.com” and other websites.
The Complainant is the registered proprietor of numerous trademark registrations around the world comprising the BMW mark, including Germany trademark number 221388 BMW and device registered on December 10, 1917 and European Union trademark number 000091835 BMW registered on February 25, 2000.
The Domain Name was registered on January 11, 2017 and resolves to a commercial website selling unauthorized, counterfeit versions of the Complainant’s BMW navigation software. The home page prominently displays the Complainant’s BMW trademark and its BMW and device trademark as well as other well-known marks of the Complainant or its subsidiaries. The Respondent has never been licensed or otherwise authorized by the Complainant to use the Complainant’s trademarks.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its BMW trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in its BMW trademarks, both by virtue of its numerous trademark registrations around the world and as a result of the goodwill and reputation acquired through its widespread use of the mark over very many years. Ignoring the generic Top-Level Domain (“gTLD”) “.online”, the Domain Name comprises the Complainant’s BMW word mark (which is also the dominant word element of its BMW and device mark) together with the word “update”. In the Panel’s view, the addition of this descriptive word does not detract from the confusing similarity between the Domain Name and the Complainant’s mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Domain Name is being used for a commercial website selling unauthorized, counterfeit copies of the Complainant’s navigation software at low prices. The Respondent has never been licensed or otherwise authorized by the Complainant to use its BMW trademarks or to sell infringing copies of its software. As many UDRP panels have previously found, there can be no rights or legitimate interests in selling counterfeit products.
The Respondent has chosen not to respond to the Complaint to explain its use of the Domain Name or to take any other steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In light of the use to which the Respondent has put the Domain Name, there is no doubt that the Respondent had the Complainant and its rights in the BMW mark in mind when it registered the Domain Name. The Respondent registered the Domain Name for commercial gain with a view to taking unfair advantage of the Complainant’s rights in the mark, both by confusing Internet users into believing that the Domain Name was being operated by or authorized by the Complainant for legitimate purposes related to the Complainant’s activities and to draw in Internet users to offer them unauthorized, counterfeit copies of the Complainant’s software at low prices. The Panel is in no doubt that this amounts to paradigm bad faith registration and use for the purposes of the Policy.
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bmwupdate.online> be transferred to the Complainant.
Date: January 26, 2018